UPC preparations - five actions to take now
After several false-starts, the biggest change in the European patent landscape, namely the introduction of a unitary patent (UP) and launch of the Unified Patent Court (UPC), is looking like a real possibility in 2022 or early 2023. There are a few key actions that patent owners can carry out over the next few months.
- Conduct a European patent and SPC audit to have full visibility of your portfolio, including “who owns what”. This is critical for validly filing any opt-outs. An assumption is made that the patent owner indicated on the European or National Patent Registers is the “true” proprietor. It may therefore be prudent to update the European/National Patent Registers in advance of the sunrise period.
- Consider opt-out options and your strategy to enable decisions to be made for the sunrise and transitional periods. This may include filing one or more divisional applications, if there is a European patent application pending, so that a single patent family can include “opted-out” and “opted-in” European patent rights. A divisional patent is treated as an independent right and does not need to “follow” the parent patent. The decision of whether to opt-out is likely to be case dependent.
- Discuss and agree your patenting and opt-out strategy with all co-owners of any patents and SPC holder(s). Explicit consent from all co-owners and SPC holder(s) is required for a validly filed opt-out. It is not possible to divide a European patent between co-owners or for any SPC to be subject to the jurisdiction of the UPC when the patent on which it is based is opted-out, and vice versa.
- Monitor competitor or third-party patents to understand patenting v opt-out strategy. It may be possible to deduce from competitor activity which patents are considered business-critical and therefore opted-out of the UPC. The filing of any divisional applications(s) may also be informative.
- Review patent and SPC licences and agreements for UPC/UP clauses. Such clauses could, for example, address whether the patent and SPC will be opted-out, whether unitary effect will be requested once a European patent application grants, whether the licensee is able to bring an action in the UPC or a national court, and the arrangements if a third party approaches a licensee for acknowledgement of a non-infringing act.